Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 31/08/2017

FORRESTERS

Rutland House

148 Edmund Street

Birmingham B3 2JA

REINO UNIDO

Application No:	016659211
Your reference:	B25810EM-MNS
Trade mark:	SEE YOU FIRST THING
Mark type:	Word mark
Applicant:	Norcros Group (Holdings) Limited Ladyfield House, Station Road Wilmslow, Cheshire SK9 1BU REINO UNIDO

The Office raised an objection on 12/05/2017 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 12/07/2017, which may be summarised as follows:

• The sign is sufficiently distinctive for services in the same way as it is distinctive for goods in classes 9 and 11, for which it was accepted,

• The sign is not promotional. The fact that it is made of a sequence of words does not mean that it has to be promotional or laudatory,

• The sign cannot realistically be seen to promote the installation, maintenance or repair of showers and related products,

• There is no direct relationship between the mark and the services because the phrase SEE YOU FIRST THING is clearly fanciful when viewed in relation of these services,

• Since the services are linked to goods in classes 9 and 11, it is illogical that the mark can be considered distinctive for the goods but not for the services.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C 329/02 P, SAT/2, EU:C:2004:532, § 25).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T 79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C 517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T 138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C 456/01 P & C 457/01 P, Tabs, EU:C:2004:258, § 38).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T 122/01, Best Buy, EU:T:2003:183, § 21).

The mark applied for is a phrase consisting of the words SEE YOU FIRST THING, seeking protection for inter alia:

Class 37: Services for the installation, maintenance and repair of showers and shower bath installations, ablutionary devices, instantaneous electrical water heaters and apparatus and fittings for shower bath apparatus, including pumps.

As it was indicated in the previous correspondence from the Office, these words will be understood by the English speaking public of the services in question, as a meaningful expression: see you as the first action of the day. The applicant did not dispute this understanding of the phrase.

The applicant argues that this phrase is not promotional, and that the mere fact that it is made of a sequence of the words should not make it a promotional message. The Office agrees that the mere fact that a signs is a phrase consisting of a sequence of words does not automatically result in it being perceived as a promotional message. What makes it a promotional message, is the meaning conveyed by the words used in the phrase, as in this case. As mentioned above, the words SEE YOU FIRST THING have a clear and unequivocal meaning that will be immediately apparent to the public. It will convey the message of seeing somebody as the first action of the day. When such a sign is placed on maintenance, installation and repair services it will be clearly perceived as a promotional message, a promise by the deliverer of such services to render them early on the next day as a first thing.

Considering that the services concern maintenance and repair of showers, bath installations, electrical water heaters etc. so devices which are crucial for a day to day functioning of any household, such a message becomes a powerful one which serves to highlight positive aspects of the services concerned. Consequently, the Office does not agree with the applicant’s assertions that the message was not promotional and laudatory. Moreover the applicant limited itself to a mere disagreement with the Office’s assessment, and did not really provide any arguments and reasoning as to why this message should not be perceived as promotional and laudatory.

The understanding of the message, as mentioned above, creates an immediate link with the services in question and prevents it from being able to serve as designation of commercial origin for them.

The applicant argues that if it is distinctive for the goods, it has to be also distinctive for the services which are related to these goods. The Office understands this logic. However in the case at hand, since the slogan describes characteristics which are emblematic for services, and not the goods as such, that is the time of rendering, the Office is of the view that the link to the goods is not immediate. For this reason it was accepted for the goods. However the time of delivering a service is an important element of the services, especially the fact that the service should be rendered shortly. Hence the message which informs the public that the services in question will have a short time of provision is directly linked to the services and describes an important aspect of the services. Therefore, contrary to the arguments of the applicant, the Office is of the view that there is a direct link between the meaning of the sign and the services in question, which renders the sign lacking in distinctiveness. The Office does not agree with the applicant that the sign is fanciful, and the applicant also did not argue what aspect of the message conveyed by the sign should be distinctive.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 016659211 - SEE YOU FIRST THING is hereby rejected for all the services claimed, namely:

Class 37 Services for the installation, maintenance and repair of showers and shower bath installations, ablutionary devices, instantaneous electrical water heaters and apparatus and fittings for shower bath apparatus, including pumps.

The application may proceed for the remaining goods.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Ewelina SLIWINSKA